Ex Parte CohenDownload PDFPatent Trial and Appeal BoardOct 31, 201613117464 (P.T.A.B. Oct. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/117,464 05/27/2011 7590 11/01/2016 John G. Posa Gifford, Krass, Sprinkle, Anderson & Citkowski, PC 2701 Troy Center Dirve, Suite 330 Post Office Box 7021 Troy, MI 48007-7021 Richard Cohen UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. ECV-10704/29 7664 EXAMINER NEGRON, ISMAEL ART UNIT PAPER NUMBER 2875 MAILDATE DELIVERY MODE 11/01/2016 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD COHEN Appeal2015-004854 Application 13/117,464 Technology Center 2800 Before PETER F. KRATZ, GEORGE C. BEST, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision2 finally rejecting claims 1, 2, 6, and 7. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The subject matter of the appeal relates to gazing globes and other ornamental objects including light sources and light-activated materials. Spec. ,-r 2. 1 Appellant identifies the real party in interest as RSR Industries, Inc. Appeal Brief filed March 24, 2014 ("App. Br."), 1. 2 Final Office Action mailed September 24, 2013 ("Final Act."). Appeal2015-004854 Application 13/117,464 Claim 1, reproduced below, is illustrative of the claims on appeal. 1. A lighting apparatus, comprising: a hollow object having an interior and an opening into the interior; a base unit coupled to the opening of the hollow object, the base unit defining a housing with a surface facing into the interior of the hollow object; the surface of the base unit having a central region including a single light-emitting diode (LED) extending outwardly from the central region to illuminate the object from the inside out; the surface of the base unit further including at least two solar panels facing into the interior of the object, including one solar panel disposed on one side of the LED, and another solar panel disposed on the other side of the LED; and wherein the housing of the base unit includes at least one battery charged by the solar panel to power the LED. REJECTIONS ON APPEAL 1. Claims 2 and 7 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite;3 and 3 The Final Action that is the subject of this appeal also included an objection to the title as not descriptive. Final Act. 2. We do not consider the objection in this appeal because the objection is a petitionable matter under 3 7 C.F .R. § 1.181 and is not within the jurisdiction of the Patent Trial and Appeal Board. See 37 C.F.R. § 1.181. The Final Action also includes an obviousness-type double patenting rejection. Final Act. 6. As Appellant points out, a terminal disclaimer was filed November 25, 2013, and March 24, 2014, disclaiming the term of any U.S. Patent granted on the subject Application extending beyond the expiration date of the full statutory term of U.S. Patent No. 7,784,956, as more fully set forth in the Terminal Disclaimer. The PTO's electronic Application file records indicate that the terminal disclaimer was approved and entered. Accordingly, we consider this rejection as having been withdrawn by the Examiner notwithstanding the Examiner's failure to list 2 Appeal2015-004854 Application 13/117,464 2. Claims 1, 2, 6, and 7 stand rejected under 35 U.S.C. § 103(a) as obvious over Liao (US 6,517,217 Bl issued February 11, 2003) (hereinafter "Liao"). DISCUSSION Indefiniteness Rejection Appellant does not contest the rejection under 35 U.S.C. § 112, second paragraph in the record of this appeal. See App. Br. 2. Accordingly, we summarily sustain the rejection. Obviousness Rejection Appellant argues the claims as a group. We select claim 1 as representative of the rejected claims, and the remaining claims on appeal will stand or fall with claim 1. Liao relates to lamps, specifically ornamental solar lamp assemblies that convert radiant energy of sunlight into electric power for the battery in the daytime, and turns on light emitting diodes (LEDs) when dark. Liao 1 :30-36. The Examiner finds that Liao discloses a lamp assembly (Fig. 2) having hollow object 30 having an interior and rim 31 defining an opening into the interior, base unit 10 coupled to the opening of hollow object 30, base unit 10 defining a housing with a surface facing into the interior of hollow object 30, the surface of base unit 10 including single LEDs 53, the surface of base unit 10 further including solar panel 51 facing into the interior of hollow object 30, where the housing of base unit 10 includes the obviousness-type double patenting rejection under the "WITHDRAWN REJECTIONS" subheading in the Answer. See Ans. 2. 3 Appeal2015-004854 Application 13/117,464 battery 55 charged by solar panel 51 to power light-emitting diode 53 (2:41- 67; Figs. 1-2). Final Act. 7. As shown in Liao's Figure 2, LEDs 53 extend outwardly from the central region of base unit 10 to illuminate hollow object 30 from the inside out. The Examiner acknowledges that Liao does not disclose an apparatus having "at least two solar panels facing into the interior of the object, including one solar panel disposed on one side of the LED, and another solar panel disposed on the other side of the LED," as recited in claim 1. The Examiner finds that one of ordinary skill in the art would have been motivated to use a plurality instead of a single solar panel facing into the interior of hollow object 30, at least one solar panel on each side of LEDs 53, to provide more power, and as a result more light to the apparatus. Final Act. 8. Appellant raises two arguments in response to the rejection. We address each in tum. First, Appellant argues that the Examiner erred in finding that Liao teaches or suggests a lamp assembly including a "base unit having a central region including a single light-emitting diode (LED)," as recited in claim 1. App. Br. 2-3; see also Reply Br. 1-3. As the Examiner points out, the phrase "including a single light emitting diode (LED)" is open-ended claim language permitting inclusion of additional unrecited elements such as a plurality of single LEDs. Examiner's Answer mailed July 17, 2014 ("Ans.") 7. In addition, Appellant's Specification makes clear that its lighting apparatus can include a plurality of LEDs. See Spec. i-f 21 ("[a]lthough a single emitter is shown [in Figure 1], clearly multiple emitters may be used, including emitters closer to the particles 106."). As the 4 Appeal2015-004854 Application 13/117,464 Examiner finds, Liao (Figure 2) discloses or reasonably suggests a lamp assembly (Fig. 2) including single LED 53 (i.e., a plurality of single LEDs 53) extending outwardly from a central region of base unit 10. Ans. 7. Thus, we do not find Appellant's first argument to be persuasive of reversible error in the Examiner's rejection of claim 1. Second, Appellant argues that the Examiner erred in finding that Liao teaches or suggests a lighting apparatus having a base unit that includes "at least two solar panels ... including one solar panel disposed on one side of the LED, and another solar panel disposed on the other side of the LED," as recited in claim 1. App. Br. 3--4; Rely Br. 3--4. As the Examiner determines, it would have been a routine and obvious design choice to use two solar panels, rather than just one, facing into the interior, with one solar panel disposed on one side of the LED, and another solar panel disposed on the other side of the LED to power brighter LEDs. See Final Act. 8; see also Ans 8-9. Appellant does not argue that the modification would have been beyond the level of skill and creativity in the art or would have rendered Liao' s lamp assembly inoperable for its intended purpose. See Reply Br. 4 (where Appellant argues that using two solar panels in Liao's lamp would "complicate the structure."). Thus, we do not find Appellant's second argument to be persuasive of reversible error in the Examiner's rejection of claim 1. In view of the foregoing, we sustain the Examiner's obviousness rejection of claims 1, 2, 6, and 7. 5 Appeal2015-004854 Application 13/117,464 DECISION For the above reasons, the rejection of claims 2 and 7 under 35 U.S.C. § 112, second paragraph, and the rejection of claims 1, 2, 6, and 7 under 35 U.S.C. § 103(a) are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 6 Copy with citationCopy as parenthetical citation